asa from the perspective of the end
users of the goods in question in the
various member states concerned, nor
even from the perspective of those
end users who were likely to use
medicines to treat the diseases of the
gastro-intestinal tract which contain
mesalazine as their active ingredient.
In the current case, Tillotts had
deduced evidence from two online
encyclopaedias in English which stated
that 5-aminosalicylic acid is a synonym
for the active ingredient, mesalazine,
and that 5-ASA is an acronym for that
synonym. The evidence did not
demonstrate that non-English speaking
end-users were aware of those names
or that they associate those names
with the active ingredient mesalazine.
Even if the end-users were aware of
the names there is no reason to
conclude that they would interpret,
without further thought, the suffix asa
as a description of the active
ingredient. As the suffix asa forms only
part of the trade marks which consist
of a single word, any descriptive
meaning which that suffix may have is
harder for the end user to make out.
In other words, it involves a complex
line of reasoning which is at odds with
the established principle that a trade
mark is descriptive if there is a
sufficiently direct and specific
relationship between the mark and the
goods and services in question to
enable the public concerned to
immediately perceive, without further
thought, a description of one of the
characteristics of the goods or
services in question.
No evidence had been brought to
show that other pharmaceutical
products with the same therapeutic
indication and active ingredient 5-ASA
were marketed by Tillotts or third
parties under names which also
included the letter combination asa.
Similarly, no evidence was produced of
similar trade marks being used in the
relevant countries.
The evidence did not establish that
medical professionals in the member
states concerned use the name 5-
aminosalicylic acid, the acronym 5-ASA
or the element asa with their patients,
or otherwise. Not even a reasonable
presumption can be inferred that the
suffix asa is descriptive from the
perspective of the end users in the
member states concerned.
Visual and phonetic comparison
of the signs
Although admittedly the first
component of word marks is more
likely to catch the consumer's
attention than what follows, the Board
of Appeal was wrong to state that
there was no visual or phonetic
similarity between the marks. They
both end with the suffix tasa.
Regarding conceptual similarity from
the perspective of the end users
unaware that the suffix asa is a
reference to mesalazine - neither of
the marks, viewed as a whole, has any
meaning. For end users unaware that
the prefixes pent and oct refer to the
Greek numbers 5 and 8 respectively,
the conceptual comparison is neutral.
However, some end-users will
recognise the beginnings of the marks
refer to Greek numbers. The General
Court noted that in certain
circumstances different numbers can
be conceptually similar if they share
common elements. In the present
case, the fact that numbers are
involved is not the only way in which
the signs at issue are conceptually
similar there is also the fact that the
numbers are in Greek, a language
which is not normally spoken in the
relevant territories. That fact is
sufficient to support a finding that
there is in fact a weak conceptual
similarity between the marks.
Summing up
The General Court annulled the Board
of Appeal's decision because, on closer
examination of the evidence filed in
support of the opposition, it found
that inadequate attention had been
paid in identifying the scope of the
relevant goods, the relevant territory
and the relevant public and therefore
incorrect inferences had been drawn
from that evidence. Thus, the General
Court, not being satisfied that asa was
in fact descriptive or, at least so as to
be readily understood by the relevant
public, went on to deduce that the
marks PENTASA and OCTASA are in
fact confusingly similar.
9
Opposition proceedings in Italy and decisions relative to
trade marks claiming class 5
Laura Pedemonte, Barzanò & Zanardo, Italy
Since the entering into force of the
opposition proceedings in Italy in July
2011, almost 4,061 oppositions have
been lodged with the Italian Patent
and Trademark Office (IPTO) and
almost 179 decisions have been issued
by the latter.
What happened in the practice of
the opposition proceedings over the
past three years?
Some statistics. Of the decisions
issued up to now, around 75% upheld
the opposition. The majority of
oppositions have been filed by foreign
companies and most proceedings were
settled by the concerned parties,
mainly during the cooling-off period by
the withdrawal or the restriction of
the opposed application.
The decisions are issued by the Office
within around twenty two months
from the filing of the opposition.
According to our law, The Office's
ultimate decision must be issued
within twenty four months from
receipt of the notice of opposition
(excluding the cooling off period and
other eventual suspensions of the
proceedings).
So far the IPTO has never requested
the parties to file second briefs in
opposition proceedings so that the
proceedings may be deemed cost-
effective.
To date, only seven decisions of the
Board of Appeal were recorded in the
Register, two of them were upheld.
The Board of Appeal is a judicial body
and its rulings can be appealed before
the Supreme Court.
But what about the decisions
relative to trade marks claiming
class 5?
Twelve decisions involving trade marks
in class 5 have been issued by the
Opposition Division and one ruling by
the Board of Appeal. Among them,
nine oppositions have been upheld
(of which three partially) and three
rejected. However two of the
oppositions upheld have been revoked
in a joint appeal by the Board of
Appeal.